In a further blow to Cadbury’s hopes of saving its colour purple trade mark in the UK, the Court of Appeal has rejected Cadbury’s attempt to amend the registration to try to preserve its validity. Consequently, the mark is now potentially vulnerable to attacks on its validity. The case serves as a timely reminder of the difficulties which persist in registering colour marks and perhaps also as a warning to apply caution in following advice from the Trade Mark Registry, which proved to be Cadbury’s downfall in this case.
An unfortunate series of events
Cadbury applied for a trade mark on the purple colour used on the packaging of its chocolate bars in 1995. On the application form it simply stated that “the mark consists of the colour purple” and submitted a swatch of purple colour. However, during the course of the application process for the mark the Trade Mark Registrar published new guidance on how colour marks should be described, and Cadbury amended its description to comply with the new guidance. The mark (referred to as 876) was registered in 1998 in respect of “chocolate in bar or tablet form”. The description reads as follows:
“The mark consists of the colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”
Unfortunately, this exact form of wording was subsequently disapproved by the Court of Appeal in response to an opposition by Nestlé to a later trade mark application by Cadbury. The Court of Appeal’s objection was directed at the reference to purple being the “predominant” colour; this, they said, opened the door to a “multitude of different visual forms” and lacked the required clarity and precision. Cadbury realised that the same objection could be made to its earlier mark (876) and it decided to try to remove the predominant colour wording. As the rules do not allow amendment to the description after registration, Cadbury argued that the mark should be treated as two alternative marks, registered as a ‘series’ under S.41 Trade Marks Act: first, the colour applied to the whole visible surface and secondly purple as the predominant colour. They hoped this would allow them to surrender the problematic predominant colour wording leaving them with a precise description and hence a valid mark in relation to the whole visible surface. Unfortunately for Cadbury, the Court of Appeal (upholding the High Court decision) rejected this argument, finding that on a correct reading the description referred to a single mark covering “every conceivable case where purple is the predominant colour” including at the extreme end where it covers the whole visible surface. This fell foul of the requirements for clarity and precision.
Describing colour marks going forward
Floyd LJ in the Court of Appeal expressed sympathy for Cadbury whose adherence to Registry guidelines had led to this situation, but this could not be allowed to affect the precedent set by the case. The case may encourage a healthy scepticism towards Registry guidance, particularly in new areas, as here, where the guidance must necessarily be given before important case law in relation to the point has been handed down. As with all marks, the key requirement for describing a colour mark is that the mark should be represented in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective. As Floyd LJ explains, the problem with colour marks is that a colour per se does not necessarily amount to a ‘sign’ – in other words consumers may not regard it as the kind of thing that indicates trade origin. To avoid a challenge on this basis, trade mark applicants often try to limit the scope of the application to where and how the colour appears, for example on the packaging. In practice, Floyd comments, attempts to do this easily fall foul of the requirement to be precise. The message for practice is clear: do not submit to the temptation to widen the description if this may make it imprecise, or, potentially, use parallel applications to widen the options.
Note: on 14 January 2019 the UK Trade Marks Act 1994 was amended to delete the requirement for the mark to be capable of graphic representation on the Register. However, the need to supply a clear and precise description remains and now forms part of the statutory wording.
Case: Cadbury UK Ltd v Comptroller General of Patents Designs and Trade Marks [2018] EWCA 05/12/2018
Joanna Adcock